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Ex Parte Scavone et al

10317339 (B.P.A.I. Jan. 29, 2008)
Ex Parte Scavone et al

18 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,575 times   189 Legal Analyses
    Holding that, in an obviousness analysis, "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it"

  2. In re Soni

    54 F.3d 746 (Fed. Cir. 1995)   Cited 92 times   2 Legal Analyses
    Finding "substantially improved results" to overcome obviousness when the 50-fold improvement in tensile strength was much greater than would have been predicted

  3. In re Merck Co., Inc.

    800 F.2d 1091 (Fed. Cir. 1986)   Cited 70 times   2 Legal Analyses
    Holding that a person of skill in the art would have expected amitriptyline to resemble imipramine in the alleviation of depression in humans because of the drugs’ close structural similarity and similar use

  4. Application of May

    574 F.2d 1082 (C.C.P.A. 1978)   Cited 45 times   1 Legal Analyses
    Holding isolated stereoisomer nonobvious over racemic mixture of stereoisomers, after conceded prima facie showing of obviousness, because isolated stereoisomer was unexpectedly nonaddictive

  5. In re Kemps

    97 F.3d 1427 (Fed. Cir. 1996)   Cited 13 times
    Upholding board's fact finding under less deferential standard of review obviated need for deciding propriety of using the APA standards

  6. IN RE FOUT

    675 F.2d 297 (C.C.P.A. 1982)   Cited 24 times
    Holding preamble of Jepson-type claim to be admitted prior art where applicant's specification credited another as the inventor of the subject matter of the preamble

  7. In re Clemens

    622 F.2d 1029 (C.C.P.A. 1980)   Cited 16 times   2 Legal Analyses
    Finding narrow range of data could not “be reasonably extended to prove the unobviousness of a broader claimed range”

  8. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,172 times   492 Legal Analyses
    Holding the party seeking invalidity must prove "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains."

  9. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 188 times   63 Legal Analyses
    Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"

  10. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 99 times   30 Legal Analyses

    (a) PATENT APPLICANT.-An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.-A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 35 U.S.C. § 134 July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98-622

  11. Section 7 - Library

    35 U.S.C. § 7   Cited 54 times   2 Legal Analyses
    Giving the Commissioner power to designate "at least three members of the Board of Appeals and Interferences" to review "adverse decisions of examiners upon applications for patents"

  12. Section 4 - Restrictions on officers and employees as to interest in patents

    35 U.S.C. § 4   Cited 13 times

    Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment. 35 U.S.C. § 4 July

  13. Section 25 - Declaration in lieu of oath

    35 U.S.C. § 25   Cited 12 times   2 Legal Analyses

    (a) The Director may by rule prescribe that any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration in such form as the Director may prescribe, such declaration to be in lieu of the oath otherwise required. (b) Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are punishable by fine or imprisonment,

  14. Section 12 - Copies of patents and applications for public libraries

    35 U.S.C. § 12   Cited 7 times

    The Director may supply copies of specifications and drawings of patents and published applications for patents in printed or electronic form to public libraries in the United States which shall maintain such copies for the use of the public, at the rate for each year's issue established for this purpose in section 41(d). 35 U.S.C. § 12 July 19, 1952, ch. 950, 66 Stat. 794, §13; Pub. L. 97-247, §15, Aug. 27, 1982, 96 Stat. 321; renumbered §12 and amended Pub. L. 106-113, div. B, §1000(a)(9) [title

  15. Section 103 - Assent to purchase of lands for forts

    4 U.S.C. § 103

    The President of the United States is authorized to procure the assent of the legislature of any State, within which any purchase of land has been made for the erection of forts, magazines, arsenals, dockyards, and other needful buildings, without such consent having been obtained. 4 U.S.C. § 103 July 30, 1947, ch. 389, 61 Stat. 644.

  16. Section 1.181 - Petition to the Director

    37 C.F.R. § 1.181   Cited 52 times   18 Legal Analyses
    Allowing for petitions invoking the Director's supervisory authority

  17. Section 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

  18. Section 1.136 - [Effective until 1/19/2025] Extensions of time

    37 C.F.R. § 1.136   Cited 17 times   30 Legal Analyses

    (a) (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title; (iii)